China copyrightCopyright is an essential part of any substantive IP protection plan in China, but many companies fail to take an extremely important step: registering their copyrights in China. One of the most common misconceptions our China lawyers frequently hear is that copyright registration in China is optional, because you do not have to file anything to have a valid copyright in China.

Like so many China misconceptions, this one has an element of truth to it. As a signatory to the Berne Convention, China has the same basic definition of what is protected under copyright as the 171 other Convention parties: an original creative work that exists in a fixed medium. A “creative work” could be anything from a video game, song, or toy to a database, map, or product design. A songwriter in Nashville, a programmer in Auckland, a furniture designer in Helsinki: all of their creative works are protected by copyright at the time they complete the work in question, and that copyright is just as valid in China as it is in the U.S., New Zealand, and Finland. But there’s a big difference between having a valid copyright in China and having an enforceable copyright in China.

In most situations, the key issue is one of proof. A copyright registration in China is presumptive evidence of ownership, and in some situations it’s the only evidence that is acceptable. Whether you’re trying to take down an infringing video on Youku Tudou or an infringing photograph of your product on Alibaba, have counterfeit dolls seized at Customs, or sue a publisher who is selling your book without permission, a certificate issued by the Copyright Protection Centre of China (CPCC) is the easiest and most efficient way to enforce your rights. And copyright registration is almost always a prerequisite to getting royalty payments from Chinese entities that have licensed copyrighted material.

Meanwhile, if you are trying to prove ownership of a creative work and you don’t have a Chinese copyright registration, it could take weeks or even months – and that assumes a clear, well-documented chain of title. If you’re at the point where you need to enforce a copyright to stop infringement, it’s almost certainly going to be time-sensitive.

China’s copyright registration process is fairly straightforward, and it does not involve substantive examination at the time of registration, but it usually takes a couple months to receive a copyright certificate. In our experience, when our clients have China copyright certificates we usually secure takedowns of infringing materials relatively quickly and easily. But without a copyright certificate, takedowns take considerably longer and sometimes they do not happen at all.

Don’t get caught flat-footed. If you have copyrightable IP that you want to protect in China, register it with the CPCC. Now.

China AttorneysBecause of this blog, our China lawyers get a fairly steady stream of China law questions from readers, mostly via emails but occasionally via blog comments as well. If we were to conduct research on all the questions we get asked and then comprehensively answer them, we would become overwhelmed. So what we usually do is provide a super fast general answer and, when it is easy to do so, a link or two to a blog post that may provide some additional guidance. We figure we might as well post some of these on here as well. On Fridays, like today.

Our China attorneys are often asked some version of the following question:

I’m making a low-budget independent movie set in China. Can I just take my cast and crew to Xi’an on tourist visas and film a movie without bothering with permits?

Our answer:

It is illegal for foreigners to engage in film production in China by themselves. Full stop. Guerrilla filmmaking may have a certain romantic appeal, but things get a lot less romantic when viewed through the bars of a prison cell. Or when you lose all your footage and equipment and have to pay a substantial fine. Maybe you’ll get away with it, but is it really worth putting you, your cast, and your crew in harm’s way? Independent films may be inherently risky, but that’s because most of them lose money, not because making the movie is dangerous. Unless you’re making a movie with Werner Herzog in the Amazon. (When Klaus Kinski is in the mix, all bets are off.)

Note also that although changes have been proposed to the laws and regulations governing film production in China, those changes will not change anything about foreigners seeking to film in China.

China IPPreviously on China Law Blog…

In Part 1 of this three-part series, we discussed the background of the Talpa-Canxing dispute over The Voice of China. Now we’ll see what happened after Canxing broke Talpa’s heart.

Undeterred by Talpa finding a new licensee, Canxing announced that it would keep producing a singing show. The format would be different, Canxing claimed, but the name would be virtually the same: The Voice of China 2016 and 2016中国好声音. Because – surprise! – Canxing’s distribution partner Zhejiang Television was the registered owner of the 中国好声音 trademark.

Talpa sought a preliminary arbitral award in Hong Kong against STAR Group Limited, Canxing’s Hong Kong affiliate. But the Hong Kong International Arbitration Centre (HKIAC) denied Talpa’s request (at least insofar as it pertained to the Chinese name) because Talpa had no rights to the Chinese name. Did we mention that Talpa should have registered the Chinese-language trademark?

More or less at the same time, Tangde filed suit in a Beijing IP court against Canxing, claiming trademark infringement and unfair competition, and seeking a preliminary injunction. To the surprise of some, on June 20, 2016 the Beijing court ruled in Tangde’s favor insofar as the name of the program, holding that Canxing could not call its program either The Voice of China or 中国好声音. Canxing appealed the ruling, but changed the English name to “Sing! China.” On appeal, Canxing lost again, and complied with the ruling by changing the Chinese name of the show to中国新歌声, which roughly translates as China’s New Singing Voice.

Around June 13, 2016, while all of these legal proceedings were ongoing, SAPPRFT issued a directive curtailing the airing of television programs based on foreign formats. The directive clarified that programs produced in a foreign country (like The Big Bang Theory) and programs based on a foreign format (like The Voice of China) would both be considered foreign content, and that television channels (1) would have to secure prior government approval to air such programs, (2) could only show two foreign content programs during prime time each year, and (3) could only show one new foreign content program each year, and not during prime time in the first year.

On July 15, 2016, the first season of 中国新歌声 began on Zhejiang Television. It had the same judges as last year’s season of中国好声音 and an almost indistinguishable format. As of this writing, the season is about half over, and the main difference appears to be that during the blind audition phase, instead of swiveling 180 degrees, the judges’ chairs slide down a long ramp. Everyone I know who watches the show (including my entire family) agrees it is virtually the same show. And it seems to be as popular as ever, both with the viewing audience and with the sponsors.

The coverage to date has focused on this story as a contract, copyright, and trademark dispute. That’s true enough, and as far as that goes it’s not a particularly noteworthy dispute by Hollywood standards. Indeed, the fact that this dispute is the subject of multiple legal proceedings could even be seen as a sign of China’s maturity as a media market. Twenty years ago, if a Chinese production company copied an American or European television program, no one in the West would have cared (much), because (1) the rights owner would not have had a plausible remedy in China, (2) the Chinese company never would have paid for the rights, and (3) even if it had paid, the amount paid would have been a pittance.

But there’s another story here. By making a few superficial changes to the show and changing the name, Canxing and Zhejiang Television are trying to skirt the restrictions on foreign content. According to them,中国新歌声 is a 100% Chinese content show. Canxing has also stated that it won’t purchase any more foreign formats in the future.

If Canxing and Zhejiang can get away with such copyright infringement — and thus far they have – this becomes a cautionary tale for foreign content owners licensing to China. Chinese companies may still see value in licensing foreign formats, because just copying a show isn’t as easy it looks. Indeed, that’s why Canxing and other Chinese production companies have been paying serious money for the most popular formats. But once they have received the production bible and produced a season or two, what incentive do they have to keep paying a license fee, if they can make a couple changes and call the show 100% Chinese?

It will be interesting to see how (or if) Canxing and Zhejiang Television are held accountable for 中国新歌声. Licensors of content have to look at this case and think seriously about frontloading any payments. They might not get a second bite.

Stay tuned for the thrilling conclusion, where I’ll discuss how content owners can better protect themselves when licensing to China to avoid the sort of trainwreck Talpa appears headed for.

China IPA strange and fascinating story is unfolding right now in the world of Chinese reality television programming. One of the most popular shows in China, The Voice of China, is embroiled in legal controversy, and the outcome could affect every single content license in China. Okay, that might be a bit of hyperbole, but still, this is one episode you won’t want to miss.

The story begins back in 2012, when Shanghai Canxing Culture & Broadcast Co. (上海灿星文化传播有限公司) licensed the format for The Voice from Dutch media entity Talpa. Talpa had originated the format back in 2010 with The Voice of Holland and has since licensed the hugely popular singing competition to more than 60 countries, including the U.S. where it is simply known as The Voice.

The Voice of China began airing in July 2012 on Zhejiang Television, and quickly became one of the most popular television shows in China. Though the English name followed the usual naming convention, the Chinese name of the show was 中国好声音, which translates, more or less, as “China’s Best Voice.”

Guess who didn’t register the Chinese name of the show? That would be Talpa. It’s depressing how often we have to repeat this: please, please, please register both your English-language trademark AND the Chinese version. By now, any company that gets caught flat-footed on this issue only has themselves (or their IP counsel) to blame.

Meanwhile, starting in 2012, the Chinese government agency overseeing media and censorship (currently known as SAPPRFT, for State Administration of Press, Publication, Radio, Film and Television), which had always restricted foreign content in China, began to announce even more directives regulating foreign film and television content, including specific limitations on when and how often foreign content shows could air on television and on streaming sites, and even specific limitations on singing competition programs. News stories and commentary about these directives often singled out The Voice as a possible target, but Zhejiang vowed that the show would remain on the air, and so it did — and continued to be a ratings powerhouse.

In early 2016, license renewal talks broke down between Canxing and Talpa. According to Canxing, Talpa asked for an exorbitant royalty percentage and also tried to get Canxing to take a package of shows when all Canxing really wanted was The Voice. This latter negotiating ploy, if true, is hardly unique to this situation; the dismal choice faced by Canxing is familiar to anyone who’s been a cable subscriber.

After Canxing ended the talks unilaterally, Talpa quickly licensed the format to another Zhejiang-based Chinese production company, Zhejiang Tangde Film & TV Co., Ltd. (浙江唐德影视股份有限公司), and Talpa and Tangde announced plans to produce seasons 5-8 of The Voice of China.

You think this story’s over but it’s ready to begin. Tune in the day after tomorrow for part two.

China entertainment lawProtection of IP is an ongoing concern for foreign businesses with projects or investments in the entertainment business in China. Many foreigners mistakenly believe their intellectual property cannot be protected at all in China so they overlook or disregard the protections available to them under Chinese law. In response to these concerns and beliefs, the UK Government, the British Film Institute and the Producers Alliance for Cinema & Television (PACT) recently collaborated to prepare a new UK-China Film & TV Toolkit.

The Toolkit includes a template, special-purpose non-disclosure agreement for use by UK film and TV businesses when dealing with their Chinese partners. Also included are detailed explanatory notes guiding UK businesses on the applicable principles of confidentiality, copyright and trademarks under PRC law. The template NDA forming part of the Toolkit was prepared according to PRC law and practice and is bilingual. It is hoped that the Toolkit will allow its users to avoid common pitfalls, including those arising from inappropriate choices of law and jurisdiction.

In liaison with Tom Duke, the UK’s Intellectual Property Attaché to China, our China entertainment law team represented the UK Government, the BFI and PACT on the project and prepared the NDA and the explanatory notes making up the Toolkit.

Intended users of the Toolkit include creative companies, producers, sales companies, VFX houses, and service providers such as film studios and consultants operating in the UK film or TV industries. The Toolkit is intended to assist these businesses to protect themselves when they disclose creative materials or commercial information, especially during the initial phase of negotiations during which an appropriate deal structure needs to be worked out. In general the Toolkit will encourage creative collaboration and openness in business dealings.

Among other things, the Toolkit covers the following:

  • How China’s confidentiality and trade secret laws differ from those of common law jurisdictions such as the US and the UK
  • The basic requirements for protecting trade secrets in China
  • The limits to protection and how protection can be lost
  • Why contracts with Chinese parties should always be bilingual
  • Why Chinese law and jurisdiction should be chosen in most instances
  • How protection under an NDA should be supplemented by trademark and copyright registrations in China

Baroness Neville-Rolfe, the UK’s Minister of State for Energy and Intellectual Property, has been visiting  China this week. The visit program has included high level bilateral meetings, policy exchanges and external stakeholder events. The visit will culminate in The UK-China IP Symposium in Beijing on Friday August 26th. The Symposium marks the 20th year of UK Intellectual Property Office cooperation with China’s State Intellectual Property Office (SIPO). As the flagship UK-China IP event, the Symposium will be co-hosted by Commissioner Shen Changyu of SIPO and Baroness Neville-Rolfe.

The Toolkit will be launched officially at the Symposium. I will introduce the Toolkit in a special session of the Symposium and explain how it will help protect intellectual property and encourage creative collaboration. There will also be sessions on promoting innovation through patents and designs and on the UK’s IP enforcement strategy to 2020. To reserve a place at the Symposium please contact

For further information about the Toolkit please contact the BFI or PACT.

Netflix in ChinaLast Friday, Alibaba felt the need to formally dispel market rumors that it would be investing in Netflix. Such “nothing to see here” announcements are almost as common on the business pages as in the sports pages, and I draw no conclusions about what the two companies may have been planning.

But it did get me thinking about Netflix and China. I see Netflix as a fantastically innovative company that, like Amazon, continually (and usually correctly) anticipates where the market is going. It’s sometimes hard to remember that Netflix began as an upstart rival to Blockbuster Video and that Blockbuster could have purchased Netflix for $50 million in 2000.

Netflix has not entered the Chinese market, though, and unless it changes its business strategy or China changes its approach to regulating content and Internet streaming, it probably  will not be doing so soon. A January piece in Wired suggested that if Netflix were willing to spend billions and make concessions to the Chinese government, it might be allowed in, but this misses the point. China is getting more restrictive regarding internet content, not less, and it is simply not possible for a foreign-owned company to do in China what Netflix does in the rest of the world.

The Chinese government has made clear that longstanding rules prohibiting foreign control of online publishing (including streaming) will be broadly interpreted and strictly enforced. Apple’s iTunes Movies and iBooks Store and a premium Disney streaming channel were yanked offline in April, with no return in sight. And you can find any number of stories about China clamping down on foreign content. As of July 1, China imposed strict regulations on the number of foreign-inspired reality shows on the air. Over the past couple years, scripted television programs ranging from NCIS to The Good Wife to The Big Bang Theory have been taken offline with the flimsiest of rationales. (If you are ever stuck for a conversation topic with a Chinese person under the age of 30, start talking about The Big Bang Theory. It has replaced Friends as the show that every college student in China has seen multiple times and uses as a cultural touchstone for understanding America.) And we haven’t even gotten to the new television censorship rules that forbid depictions of (among other things) drinking, smoking, adultery, violence, homosexuality, and the occult.

The only way I can see Netflix entering the Chinese market is with a Chinese partner that takes on full responsibility for the content and the delivery of such content. Which is not much different than just finding a Chinese distributor, as Netflix already does with its original programs like House of Cards. 

Netflix can take solace in one thing, however; China’s new rules on foreign television programs require that the government review an entire season before a single episode can be shown online. Looks like everyone’s getting on the bingewatching bandwagon.

China TrademarkA couple years back, I wrote a post explaining why it rarely made sense to file a trademark application in China via the Madrid System. Nothing has changed substantively since then, but a growing trend among foreign rightsholders has made the Madrid System even less relevant.

As I have written previously, the Chinese Trademark Office (CTMO) does not require trademark applicants to prove use of the mark at the time of application, or any time thereafter (unless a third party seeks to cancel the mark for non-use, which is only possible after three years). As a result, many corporations—especially multinational corporations facing an onslaught of counterfeit merchandise—have started filing applications that cover a range of goods far greater than what they are actually producing or selling. Although we don’t represent Starbucks, I like to hold them up as an example of the gold standard in “offensive” trademark registration. They have registered the word “Starbucks” in China as a trademark in all 45 classes of goods and services. Starbucks brand diapers? Covered. Starbucks brand patio furniture? Covered. Starbucks brand binoculars? Covered.

As far as I know, Starbucks has not sold and has no plans to sell branded diapers, patio furniture, or binoculars. Accordingly, it would not be able to register trademarks for such goods in the United States or most other countries in the world –and therefore could not use such registrations as the basis for a Madrid System application. In other words: the only way Starbucks, or any other company, can take advantage of the China trademark system’s unique protections would be by filing a national trademark application in China.

The only mystery to me is why more companies with the means and motivation aren’t taking advantage of the Chinese trademark system. I just did a quick search for “Star Trek” on the CTMO database—not that I’m looking forward to Star Trek Beyond or anything—and the folks at CBS/Viacom are just asking for trouble. They have registered “Star Trek” in only classes 9, 16, and 41, which means that an entrepreneurial Chinese company could soon be boldly going where no man has gone before. Star Trek vitamin supplements, anyone?

China trademarks at customsA few weeks back, China Customs released its IP protection statistics for 2015. The data revealed a number of interesting trends, many of which were summarized in Mark Cohen’s China IPR Blog. I’d like to focus on two in particular.

1. Trademark infringements made up 98% of the items seized, with copyright and patent infringements combined accounting for the remaining 2% of seizures.

A simplistic (and incorrect) interpretation of this statistic would suggest that trademark infringement is a far bigger problem than copyright and patent infringement. In fact, the reason for the disparity is that it’s relatively easy for a customs inspector to tell if a product is violating a trademark based on a quick visual inspection – and almost impossible to tell if a product is violating a copyright or trademark. This does not mean that copyright and patent holders should throw up their hands and give up; it just means they should pursue other avenues. For copyright holders (especially owners of movies, television programs, recorded music, and books), it largely means pursuing download sites and the service providers that host them. For patent holders, it means filing lawsuits in China and/or the US, and pursuing 337 actions in the US.

2. Of the items seized by Chinese Customs, the vast majority (98%) were seized based on a tip given to China Customs by the rightful IP rightsholder. In 2014, the percentage of goods seized due to such a tip was 65%.

Put together, these statistics strongly suggest one or both of the following: (1) IP rightsholders are actively engaged in pursuing infringers and (2) customs officials are kept busy enough with tips from IP rightsholders that they don’t have time to conduct many inspections on their own. (Chinese Customs inspects goods either on its own authority or based on a specific request from an IP rightsholder.) Either way, even if counterfeit product bearing your trademark is being regularly shipped from China, there’s only a miniscule chance it will be stopped at customs if you aren’t being proactive. What does it mean to be proactive? First, register your trademarks in China. Second, register those trademarks with Chinese Customs. Third, track the counterfeit product, which these days mostly leaves China via e-commerce. At the very least, you need to have a handle on what’s being sold on Alibaba, Taobao,, and other key Chinese e-commerce sites. Once you understand who is selling your goods and where the goods are coming from, you can start to engage customs.

For trademark owners, customs seizures can be a valuable part of an anti-infringement strategy. But don’t expect much help from the customs authorities if you can’t be bothered to help yourself.

China taxes

This is the second in a series of posts about problems encountered when attempting to get paid by a Chinese company. In Chinese Company Won’t Wire You Money. Have the Rules Changed? I looked briefly at the underlying framework of rules applying to foreign conversions and remittances. In this post I consider tax-related issues that can often cause payment delays or defaults. These issues vary depending on the nature of the payment. Let’s look at the three areas of payment encountered most by our China lawyers.

Payments to foreign service providers. These days the Chinese tax authorities routinely impose a tax on all payments from Chinese companies to foreign service providers. The problem is identifying the appropriate tax. Is it withholding, VAT, business tax, income tax or some combination? Even when the appropriate kind of tax, or combination of taxes, has been determined there is little consistency on the percentage amount of tax withheld.

Royalties. Where there is a royalty payment for a technology or an IP transfer, the underlying contract is supposed to be registered, which can be a time-consuming procedure in certain districts. For example, where the royalty is for a license to publish, the license must be approved by the Beijing authorities in charge of that area of publication. Where the license is for a trademark, the license must be registered with the trademark office. If there is no registration, no payment can be made. For royalty payments, the liability to withholding and VAT is clearer but there is still little consistency on the rates of tax and how they are combined.

FDI or M&A. Such payments from China require approval and usually this approval must come from Beijing. Approval is uncertain and the authorities may change their minds. Thus, a transaction that the Chinese side in good faith assumed was approved can be denied at the last minute, due to a sudden and unexplained denial of permission to remit.

There are two difficulties common to all three kinds of remittances.

First, tax authorities in many districts now require proof of the existence of the foreign payment recipient. Compliance with this additional requirement often involves production of a certificate of good standing authenticated by the Chinese embassy or consulate in the foreign country concerned. This is expensive and time-consuming.

Second, the procedures are often interpreted and applied differently from bank-to-bank, branch-to-branch and district-to-district. The tax rates, too, are not always consistent from district-to-district and even within districts from officer-to-officer. The whole situation is in flux.

The result is that there is really no way that any side of a China deal can be completely certain that a payment will go through until after the payment is received.

In my next post I will look at the due diligence you can do to identify or avoid defaults or delays in money transfers out of China.

China Media and Entertainment LawOur lead China media and entertainment lawyer out of Beijing, Mathew Alderson, was recently interviewed for a VICE Sports story by Joshua Bateman, entitled, The UFC With Chinese Characteristics. The full text of the interview is below, with the publisher’s kind approval.

Alderson: I understand the UFC [Ultimate Fighting Championship] business is to be conducted by a Nevada LLC. The company promotes and produces mixed martial arts events broadcast free-to-air or through subscription services. I understand the company to have a broadcast deal with Fox Sports. The company is reportedly in discussions with Chinese buyers or investors. You are therefore interested in the effect Chinese ownership or investment may have on the management and regulation of the company.

At the outset, it should be appreciated that Chinese ownership of the Nevada LLC (or any other non-PRC company) would not, of itself, bring the company under Chinese regulation. The company would continue to be subject to regulation in the place in which it is established (Nevada and the United States) and the place or places in which it conducts business. The UFC would only become subject to Chinese regulation to the extent it conducts business in China. As a foreign company, the UFC could only promote its events in China with the assistance of a local partner with the necessary permits and licenses. Production of TV programs in China would also require the assistance of such a partner, probably a local co-producer. This is because foreign investment is restricted in the sectors in which UFC operates.

I answer your questions with these introductory remarks in mind.

VICE Sports: Is it possible Chinese regulators would view the UFC as a media company, and that would impact investment opportunities or how the company is regulated in China?

Alderson: Yes, it is possible because the UFC business model involves promoting live events and producing and broadcasting TV programs. These are sectors in which foreign investment is restricted. The impact would depend on whether the UFC established an entity in China and whether that entity is wholly Chinese or partly foreign-invested. A foreign-invested entity would attract greater scrutiny. The impact would be less if the Chinese market were approached by licensing content into China.

VICE Sports: If the UFC were to be acquired or were to accept investment from a Chinese company, would there be political/regulatory pressure in China for the company to alter its management or board structure to have more Chinese representation?

Alderson: Again, it would depend on where the company is operating and where the investment is made. There would be more scope for such pressure if a unit of the company were established in China, whether as a fully Chinese company or as a foreign-invested company. It would be much harder for Chinese owners to exert, or be subject to, this kind of pressure in holdings outside of China; although, if they had the necessary voting rights, Chinese owners could — like any investors — control or at least influence management abroad.

VICE Sports: If current UFC ownership does not sell the company but instead attempts to expand in China going forward, could they do so on their own or would they most likely need to join forces with a Chinese partner?

Alderson: They would need Chinese partners because foreign investment is restricted in the sectors in which they would likely be operating. The most likely business models are joint ventures and co-productions.